. ore JUDGMENT No. 2.22. / 8-1. IN THE FEDERAL COURT OF AUSTRALIA ) QUEENSLAND DISTRICT REGISTRY GENERAL DIVISION ) ~ QLD G172 of 1987 BETWEEN: ROVE RANGER PTY. LTD. Applicant AND: MANFAL PTY. LTD. Respondent MINUTES OF ORDER JUDGE MAKING ORDER: PINCUS J. DATE OF ORDER: 2 OCTOBER 1987 WHERE MADE: BRISBANE THE COURT ORDERS THAT: 1. Until final determination of this application or earlier order, the respondent be restrained by itself, its servants or agents from promoting any of its houses in Queensland by the use of the word "Trendsetter" as and from 5 October 1987. 2. Costs of the application today be the applicant's costs in the proceedings. NOTE: Settlement and entry of orders 18s dealt with in Order 36 of the Federal Court Rules. F 200CT 1987 FEDERAL COURT OF , AUSTRALIA IN THE FEDERAL COURT OF AUSTRALIA ) QUEENSLAND DISTRICT REGISTRY ) QLD Gi72 of 1987 GENERAL DIVISION ) BETWEEN: ROVE RANGER PTY. LTD. Applicant AND: MANFAL PTY. LTD. Respondent PINCUS J. 2 OCTOBER 1987 EX TEMPORE REASONS FOR JUDGMENT This is an application for an injunction which was made on 22 September 1987. The applicant 1s a company which seeks against the respondent company an injunction restraining the use of the word "Trendsetter", or the word and symbols "Trendsetter 4+", in relation to the promotion and conduct of a house-building business. After some discussion on the subject, 1t was agreed that the matter should be treated as an application for an interlocutory injunction, because the respondents counsel did not have instructions to have the matter treated as an application for a final injunction. Each of the applicant and the respondent is a substantial home builder in Queensland, the respondent being based in Western Australia. The respondent builds houses which have attributed to them various names, and in 1985 it decided to introduce a new name, "Trendsetter". In 1986 1t added a variant and used the name "Trendsetter 4+". The material before me includes a statement by a Mr. B.K. Sullivan, the Queensland manager of the respondent, that at the time of introduction of those names the respondent did not know of their use in Queenstland. In fact, however, they have been used in Queensland by the applicant since 1982. The applicant registered the name "Trendsetter Homes" on 18 November 1982, and from that date, or earlier, traded under the name. It has satisfied me, sufficiently for the purposes of interlocutory proceedings, that it has built up goodwill under the name. It also uses its own name, Rove Ranger Pty. Ltd., but the advertisements in exhibits 1 and 2, and also those annexed to the affidavit of Mr. Padget, made on behalf of the applicant, show that the name "Rove Ranger" is given no emphasis, and the homes sold by the applicant are called "Trendsetter Homes". They are expensive and are substantially dearer than those built and sold by the respondent. It may seem rather unfortunate that this clash has occurred, but it appears that when the name was originally adopted, the respondent's management in Western Australia was unaware of the potential problem. However, at the time of introduction of the Trendsetter range to Queensland in August this year, Mr. Sullivan, whom I have just mentioned, well knew of the applicant's business as "Trendsetter Homes". Mr. Sullivan says in para.9 of his affidavit: "I have had some 40 years experience in the building industry in Queensland, and am aware of the Applicant's business 'Trendsetter Homes'. I was aware of this business at the time of introduction of the Respondent's 'Trendsetter 4+' Design to Queensland in August 1987. I was not aware however that the Applicant marketed 11 standard design houses known and numbered as Trendsetter 1 through to Trendsetter 11, or that the Applicant marketed any houses under the design name of 'Trendsetter' at all until I read the Affidavit of Mr. Padget filed in these proceedings." The distinction, as I understand it, which Mr. Sullivan takes im the passage I have just quoted is that made by the respondent's counsel, Mr. McMurdo, namely that there is an important difference between applying the name "Trendsetter Homes" to a business and applying the name to houses sold. So far as the applicant's business 18S concerned, 1t does not seem to me that the distinction I have just referred to is of any great moment. Exhibit 2 has, for example, an advertisement in the Courier Mail on 2 May 1987 with the words "Trendsetter Homes" as the most prominent, and slightly less prominent the words, "The successful person will chose a Trendsetter home" immediately underneath. There is also an advertisement of April 1987 which has as the heading: "Your new home should be a Trendsetter." The applicant, on the material before me, uses the name "Trendsetter" as the name of its homes and has done so for years. at The respondent, putting it simply, wants to use the name "Trendsetter" as the name of some of its homes. In his address, delivered with his customary conciseness and ability, Mr. McMurdo pointed out that the two competing businesses are not in the same market, that the applicant's houses look different from those of the respondent and that a person who studied the question closely enough would not be confused. Nevertheless, on the face of it, it must be likely to mislead a person who is familiar with the name under which the applicant sells its houses, to see another sort of house advertised as a "Trendsetter" Home. I refer in particular to exhibit F to Mr. Sullivan's affidavit, which 1s a brochure for the "Trendsetter 4+" and which has the home describd by that name in the most prominent lettering in the brochure. It would seem to me strongly arguable that a person who had attached some recognition to the applicant's homes described as "Trendsetter Homes" would be likely to be misled by finding another, cheaper house, described as "Trendsetter". The other matter emphasised by Mr. McMurdo is that' the advertisements used by the respondent make it clear that the name of the business which constructs the homes in question is not necessarily "Trendsetter". That is not, perhaps, as clear as it might be in exhibit F, but on the whole I think I should decide the case on the basis that a person of reasonable intelligence, seeing the respondent's advertisements, would appreciate that the name of its business is "Mansard". That having been said, the case seems one in which the applicant's claim for an interlocutory injunction is clearly made out. The injunction is sought on the usual basis, that is that Mr. Heyworth-Smith offers an undertaking as to damages, and if the case is pursued and lost, then the $8,500 which, it is said, will be thrown away by the respondent if I grant an injunction may be able to be claimed. On the other hand, if I refuse an injunction, the problem gets worse, because the respondent will be free, and no doubt would be inclined, to continue to attempt to build up goodwill and recognition in respect of its "Trendsetter" range. The distinction to which I refer above may be illustrated, in a slightly fanciful way, by postulating that the defendants in Turner v. General Motors (Australia) Pty. Ltd. 42 C.L.R. 353, instead of taking the course which they there took, had brought out a range of cars under the name General Motors, making 1t clear that this range of cars was made by people called Turner. If the car were a cheap and inferior one, no doubt Turner could have argued that any intelligent person would have appreciated that the General Motors car brought out by him was not associated with the well-known American company. I see the force of that line of argument, but it seems to me clear enough here that the applicant's case is one in which there is not only a serious question to be tried, but a prima facie case of misleading conduct not designed, I think, to mislead, but likely to mislead a person who recognized the name "Trendsetter" as applicable to homes of good quality. Counsel have, at my suggestion, had some discussion as to the form of the order, and while not abandoning in the slightest his resistance to any order being made, I have been informed by Mr. McMurdo that he has agreed with Mr. Heyworth-Smith that an order in the following form is thought to be suitable. It will be ordered that until the final determination of this application or earlier order, the respondent be restrained by itself, its servants or agents, from promoting any of its houses in Queensland by the use of the word "Trendsetter", such restraint to operate as and from the fifth day of October 1987. The costs of the application today will be the applicant's costs in the proceedings. 1,5 fa Ton waned ; corte thc' ig the preceding s* rcatons for sractur tot ei rc ce 2 r e ca eat his acu oT ah er i oi hee Justice Fines AMUTEIOS . Associate Dated 2 Ocdrtboy 1987] _